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`EXHIBIT 1013
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`TO PETITIONER GOOGLE INC.’S
`PETITION FOR COVERED BUSINESS
`METHOD REVIEW OF
`U.S. PATENT NO. 7,334,720
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 1 of 11 PageID #: 31682
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`SMARTFLASH LLC, et al.,
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`v.
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`APPLE INC., et al.,
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`SMARTFLASH LLC, et al.,
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`
`v.
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`SAMSUNG ELECTRONICS CO., LTD.
`et al.,
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`Plaintiffs,
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`Defendants.
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`Plaintiffs,
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`Defendants.
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`
`
`§
`§
`§ CASE NO. 6:13cv447-JRG-KNM
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`§
`§ JURY TRIAL DEMANDED
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` §
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`§
`§
`§ CASE NO. 6:13cv448-JRG-KNM
`§
`§ JURY TRIAL DEMANDED
`§
`§
`§
`§
`§
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`
`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion resolves an additional claim construction dispute in United
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`States Patent Numbers: (1) 7,334,720; (2) 7,942,317; (3) 8,033,458; (4) 8,061,598; (5) 8,118,221;
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`and (6) 8,336,772. For the reasons discussed below, the Court resolves the dispute as stated.
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`BACKGROUND
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`On November 14, 2014, Smartflash filed a Motion to Enforce Compliance with O2 Micro,
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`or in the Alternative, to Resolve Manufactured Claim Construction Disputes that Defendants Intend
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`to Argue to the Jury (6:13CV447, Doc. No 317; 6:13CV448, Doc. No. 363).1 The Court heard
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`argument on dispositive and Daubert Motions on December 2, 2014. At that hearing, the Court also
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`1 The Court GRANTED that motion in the alternative by ordering supplemental claim construction briefing as noted
`below.
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`1
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`Google Exhibit 1013 Page 00001
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 2 of 11 PageID #: 31683
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`heard argument on Smartflash’s Motion and ordered the parties to submit supplemental claim
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`construction briefing. Smartflash and Defendants Apple, Inc., Samsung Electronics Co., Ltd.,
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`Samsung Electronics America, Inc., Samsung Telecommunications America, LLC, HTC
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`Corporation, HTC America, Inc., Exedea, Inc. (collectively “Defendants”) submitted additional
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`briefing.
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`Smartflash alleges Defendants infringe the following patents: U.S. Patent No. 7,334,720 (the
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`’720 Patent); U.S. Patent No. 7,942,317 (the ’317 Patent); U.S. Patent No. 8,033,458 (the ’458
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`Patent); U.S. Patent No. 8,061,598 (the ’598 Patent); U.S. Patent No. 8,118,221 (the ’221 Patent);
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`and U.S. Patent No. 8,336,772 (the ’772 Patent). All patents are titled “Data Storage and Access
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`Systems.” The patents-in-suit all stem from a common specification and share a common written
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`description and figures.
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the
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`patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns
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`Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest
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`of the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl. Network
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`Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as
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`understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at
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`1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314.
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`“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other
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`Page 00002
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 3 of 11 PageID #: 31684
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`claims, asserted and unasserted, can provide additional instruction because “terms are normally
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`used consistently throughout the patent.” Id. Differences among claims, such as additional
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`limitations in dependent claims, can provide further guidance. Id.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he specification
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`‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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`single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
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`1325 (Fed. Cir. 2002). In the specification, a patentee may define his own terms, give a claim term
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`a different meaning than it would otherwise possess, or disclaim or disavow some claim scope.
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`Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary
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`meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life
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`Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). This
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`presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc.
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`v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example,
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`“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is
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`rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367,
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`1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the specification
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`may aid the court in interpreting the meaning of disputed language in the claims, particular
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`embodiments and examples appearing in the specification will not generally be read into the
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 4 of 11 PageID #: 31685
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`claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also
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`Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim construction
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`because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v.
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`LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
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`applicant may define a term in prosecuting a patent.”). The well-established doctrine of prosecution
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`disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
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`disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
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`2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed
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`or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton
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`Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window Fashions, LP v.
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`Novo Indus., L.P., 323 F.3d 989, 994 (“The disclaimer . . . must be effected with ‘reasonable clarity
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`and deliberateness.’”) (citations omitted)). “Indeed, by distinguishing the claimed invention over the
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`prior art, an applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp.,
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`164 F.3d 1372, 1378–79 (Fed. Cir. 1988) (internal quotation omitted). “As a basic principle of
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`claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
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`evidence and protects the public’s reliance on definitive statements made during prosecution.”
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`Omega Eng’g, Inc., 334 F.3d at 1324.
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`4
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`Page 00004
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`Uniloc’s Proposed Construction
`No construction necessary
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`These terms do not require “logically separate”
`memories
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`Defendant’s Proposed Construction
`Each of (1) “content data memory,” and “data
`memory” is, at least logically separate from
`each of (2) “parameter memory” and “use rule
`memory”
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`“use status data” requires, at least, logically
`separate storage from content data
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`“use rules” require, at least logically separate
`storage from content data
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 5 of 11 PageID #: 31686
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`CLAIM CONSTRUCTION
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`“content data memory” / “data memory” / “parameter memory” / “use rule memory” / “use status
`data” / “use rules”
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`At the claim construction hearing and in the parties’ claim construction briefing, initially the
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`dispute for these terms centered on whether the memory types had to be physically separate from
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`each other. The Court determined that they did not have to be physically separate. Now,
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`Defendants conten(cid:71) that the terms require some separation, if not physically, then logically separate.
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`Smartflash contends separation is not required.
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`Defendants argue that the claim language supports that the memory terms must be logically
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`separate. 6:13CV447, Doc. No. 360 at 2. Defendants point to Claim 1 of the ’720 Patent, which
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`recites “a data carrier comprising non-volatile data memory storing content memory and non-
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`volatile parameter memory storing use status data and use rules.” Id. at 2–3. Defendants assert that
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`where claim elements are listed separately and the claim uses “and,” the inventor clearly intended to
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`claim separate and distinct components. Id. at 3 (citing TIP Sys. LLC, v. Phillips &
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`Brooks/Gladwin, Inc., 529 F.3d 1364, 1375–76 (Fed. Cir. 2008); Becton, Dickinson & Co. v. Tyco
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`Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010); Gaus v. Conair Corp., 363 F.3d
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`1284, 1288 (Fed. Cir. 2004)). Defendants contend that a person having ordinary skill in the art (a
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`“PHOSITA”) would similarly interpret Claims 2, 7, 15 and 31 of the ’598 Patent as referring to
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`Page 00005
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 6 of 11 PageID #: 31687
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`separate and distinct memories. Id. (citing Defendants’ experts’ declarations). Defendants further
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`contend that Smartflash’s construction ignores express claim language and impermissibly broadens
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`the claim scope. Id. at 4. Moreover, Defendants argue that Smartflash’s attempt to support its
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`position by citing Cannon Rubber Ltd. v First Years, Inc., 163 Fed. Appx. 870, 877 (Fed. Cir. 2005)
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`fails because the Federal Circuit distinguished between claims reciting functional language and
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`claims reciting purely structure. According to Defendants, Federal Circuit precedent requires that
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`where claims recite only structural components in separate claim elements, they must be distinct.
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`Id. at 5–6 (citing Gaus, 363 F.3d 1284). Further, Defendants assert that the specification
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`“indisputably discloses distinct memory structures.” Id. at 6–7. (citing the ’720 Patent cols. 17:40–
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`42; 18:8–10; 18:18–20; Figure 9) (“. . . data memory also stores an index of content data stored in
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`Flash memory 214 and associated content use rules, as well as DRM and royalty data for
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`maintaining an audit trail of use history for rights management . . . . content data memory 214
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`preferably comprises at least 100 MB of data storage, partitioned as data blocks of a size selected to
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`match the stored content type.”).
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`Additionally, Defendants contend that the patentee made statements in the prosecution
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`history that support their construction. Id. at 7. Defendants highlight statements by the patentee
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`that explain how content data and “use status data” are separately stored when distinguishing over a
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`prior art reference. Defendants assert such statements are binding even if not necessary to
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`overcome prior art because the patentee made claim amendments to overcome a Patent Office
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`rejection. Id. (citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1377 (Fed. Cir.
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`2008)). Further, Defendants assert that a PHOSITA would read the pre-amendment claim language
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`to cover “use status data and use rules read from either recited memory,” but the post-amendment
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`language “makes clear that use status data and use rules are read from only parameter memory,
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`separate from data memory.” Id. at 8 (citing the Court’s Claim Construction Order, 6:13CV447,
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 7 of 11 PageID #: 31688
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`Doc. No. 229 at 17). Defendants cite Shire Dev., LLC v. Watson Pharms., Inc., 746 F.3d 1326,
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`1332 (Fed. Cir. 2014) (finding claims required separate and distinct matrices based on a prosecution
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`history statement), for the proposition that, even where statements in prosecution history do not rise
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`to an unmistakable disavowal, they still inform the claim construction. Id. at 9. Defendants
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`contend that the Court should also interpret the patentee’s prosecution history statements about “use
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`status data” and “use rules” to require a distinction between the different recited memories in the
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`claims.
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`Moreover, Defendants assert that the same reasoning applies for “use status data” as the
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`“memory” terms for the requirement that “use status data” is always stored separately from content
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`data. Id. at 10. According to Defendants, the plain claim language and the prosecution history
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`similarly support that “use status data” must be stored logically separate from content.
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`Smartflash responds that prosecution disclaimer does not apply because the Court could
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`reasonably interpret the prosecution statements as relating to the lack of disclosure of “use rules” in
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`the prior art, not storing “use status data” and content data separately. 6:13CV447, Doc. 365 at 4.
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`Smartflash points to the Court’s Claim Construction Order stating, “[t]he applicant contrasted the
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`invention with the electronic ticket information of [the prior art], which was validated by an
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`electronic signature, not use rules.” Id. (quoting 6:13CV447, Doc. No. 229 at 18). Smartflash
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`asserts that because this interpretation is reasonable, Defendants cannot show clear and
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`unambiguous disavowal that would warrant anything less than the full claim scope. Id. at 4–5.
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`Smartflash argues that Shire does not apply here because claim language in that case made it
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`chemically and spatially impossible for the inner and outer matrices to be the same thing. Id. at 5
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`n.3. Smartflash continues that even if prosecution disclaimer applies, it should only apply to “two-
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`memory claims like [C]laim 1 of the’720 [P]atent.”2 Id. at 6. Smartflash takes the position that
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`2 According to Smartflash, these include Claim 1 of the ’720 Patent and Claims 2, 7, and 15 of the ’598 Patent.
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 8 of 11 PageID #: 31689
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`claims that do not explicitly recite content and use rules as stored in two different memories do not
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`require separate storage. Id. at 7. Smartflash asserts that the prosecution statements referred only to
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`those claims, and other claims should be unaffected. Id. 7–8.
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`Moreover, Smartflash contends that any degree of separation satisfies the alleged
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`requirement. Id. at 8. According to Smartflash, Defendants’ own experts provided inconsistent
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`theories of “logical separation” in their reports and depositions despite now submitting declarations
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`that present a unified theory. Id. at 9. (citing several different reports and depositions from
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`Defendants’ experts). Smartflash contends that Defendants’ failure to withdraw the conflicting
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`theories indicates they plan to argue claim construction to the jury. Id. As an example, Smartflash
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`argues that Defendants’ experts have no basis for their theory that two files are sufficiently separate
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`inside a folder but not inside a ZIP file. Id. at 10. Smartflash maintains that this theory is a clear
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`attempt to set up non-infringement arguments and explains how Apple’s applications contain “use
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`status data” and “content data” in a data structure analogous to a ZIP file. Id. Instead, Smartflash
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`asserts, separate data structures in the same file can also be “logically separate.” Id.
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`Smartflash does not address the plain language of Claim 1 of the ’720 Patent that distinctly
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`recites content and parameter memories or similar language from other claims. Although the claim
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`language does not require physically separate memories, separately listed claim elements require
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`some distinction. See, e.g., Becton, Dickinson, 616 F.3d at 1254. Neither does Smartflash address
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`Defendants’ other arguments regarding the support for separate memories in the specification.
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`Similarly, the specification provides support for some degree of separateness among the memories,
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`at least where recited distinctly in the claims. See ’720 Patent cols. 6:33–39; 18:1–23.
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`Smartflash focuses on one of the Court’s statements in the Claim Construction Order: “The
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`applicant contrasted the invention with the electronic ticket information of [the prior art], which was
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`validated by an electronic signature, not use rules.” 6:13CV447, Doc. No. 229 at 18. However,
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 9 of 11 PageID #: 31690
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`immediately preceding that statement, the Court noted “the applicant relied on evaluating ‘separate
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`use data’ according to use rules.” These separate use rules were in contrast to “‘ticket data that is
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`either valid or not valid in and of itself’” with no degree of separateness. Id. (quoting 6:13CV447,
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`Doc. No. 160, Ex. G, 2/6/2007 Amendment at 2 & 9–10). Therefore, even though the Court
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`rejected Defendants’ proposal of physically separate memories, the Court did not preclude a
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`requirement of logically separate memories.
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`Further, “[a]n applicant’s invocation of multiple grounds for distinguishing a prior art
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`reference does not immunize each of them from being used to construe the claim language. Rather,
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`as [the Federal Circuit has] made clear, an applicant’s argument that a prior art reference is
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`distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant
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`distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC,
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`474 F.3d 1361, 1374 (Fed. Cir. 2007). The patentee therefore, may be held to statements explaining
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`how content data and use status data are separately stored when distinguishing over the prior art
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`even if there were additional grounds for distinguishing the prior art. Additionally, clear disavowal
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`is not required to simply inform claim construction. See Shire, 746 F.3d at 1332 (“Although the
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`prosecution history statements do not rise to the level of unmistakable disavowal, they do inform
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`the claim construction.”).
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`Thus, the patentee’s statements during prosecution support Defendants’ argument that some
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`degree of separation is required where distinct memories are recited or the claims indicate that
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`particularly types of data are separately stored.
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`On balance, where claims recite two distinct memories, such as “parameter memory” and
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`“content memory,” or otherwise state that content data is stored separately from “use rules” or “use
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`status data,” logically separate storage is necessary. Smartflash concedes that, if adopted, the
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`“logically separate” requirement would apply to Claim 1 of the ’720 Patent and Claims 2, 7, and 15
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`of the ’598 Patent. 6:14CV447, Doc. No. 365 at 5–6.
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`Claim 31 of the ’598 Patent recites that “use rules” and “ use status data” are read from
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`“parameter memory,” but, as Smartflash notes, the claim does not explicitly recite another distinct
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`memory type for storing content. However, “parameter memory” is used throughout the claims and
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`specification as storing “use rules” and “use status data” separately from content. Claim 31 of the
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`’598 Patent must be consistently interpreted in light of the specification and the context of the other
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`claims that distinctly recite both “parameter memory” and “content data memory.” See Phillips,
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`415 F.3d at 1314 (”Because claim terms are normally used consistently throughout the patent, the
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`usage of a term in one claim can often illuminate the meaning of the same term in other claims.”);
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`CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117 (Fed. Cir. 2014). Therefore, logically separate
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`storage is also required for “parameter memory” and content for Claim 31 of the ’598 Patent.
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`Claim 26 of the ’772 Patent, by contrast, recites only “non-volatile memory” (rather than
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`distinguishing between non-volatile “parameter memory” and non-volatile “content memory”) and
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`does not otherwise specify that content is necessarily stored separately from “use status data and use
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`rules.” Therefore, there is no separate storage requirement for that claim. Similarly, for example,
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`Claims 8, 10, and 11 of the ’458 Patent and Claim 32 of the ’772 Patent do not distinctly recite
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`separate memories for “use status data” and “stored data.”
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`Arguments related to whether two files stored in a ZIP archive file are logically separate, as
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`well as arguments related to memory cells, partitioned memory, and memory linking, relate to
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`questions of fact for determining infringement rather than questions of law for claim construction.
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`See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court
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`has defined the claim with whatever specificity and precision is warranted by the language of the
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`Case 6:13-cv-00448-JRG-KNM Document 467 Filed 01/26/15 Page 11 of 11 PageID #:
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`claim and the evidence bearing on the proper construction, the task of determining whether the
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`construed claim reads on the accused product is for the finder of fact.”).
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`Thus, for claims reciting both “data memory” and “parameter memory” or “use rule
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`memory,”3 the “content data memory” or “data memory” must be logically separate from the
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`“parameter memory” or “use rule memory.” Likewise, the claims require “use status data” and
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`“use rules” to be stored separately from content only where the claims explicitly recite such a
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`requirement, such as by distinctly reciting different memories.
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`CONCLUSION
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`The Court hereby ADOPTS the above claim construction for the patents-in-suit.
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`3 Of the claims that the parties have addressed, the claims that fall into this category are Claim 1 of the ’720
`Patent and Claims 2, 7, and 15 of the ’598 Patent. See 6:14CV447, Doc. 360 at 2; id., Doc. No. 365 at 6.
`Claim 31 of the ’598 Patent requires similar treatment.
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`So ORDERED and SIGNED this 26th day of January, 2015.
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`Page 00011
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